Federal Judiciary

New ND Cal Patent Rules

By Michael Smith

Dennis Crouch's Patently-O blog just featured a post by Edward Reines, chair of the ND Cal's local rules advisory committee on that district's new patent rules.  The post contains a copy of the new rules and the committee report explaining the changes.
The 2008 revisions include two significant changes, he writes.  The first requires the parties to work together to identify the most significant claim terms ("MST"s) in dispute in an attempt to limit the number of terms that need to be construed by the court.  Second, the rules eliminate the concept of "preliminary" contentions in favor of a single round of contentions that only be amended for good cause (meaning that the automatic amendment when necessitated by Markman ruling is gone).  While the post and the commentary don't emphasize it, however, there seems to me to be a third change, and that is modifying contentions to add additional subjects to be disclosed, such as direct/indirect infringement contentions, obviousness, standing - all issues that I've seen come up in practice recently - to reflect the increasing importance of defensive issues in light of recent caselaw.  (One thing I do miss, though, is a redline comparison of the former rules and the new rules - if anyone knows of one, shoot me a copy, would you?)
I haven't studied the new rules in detail yet, but will soon.  What do readers think about them?  Should the Eastern District of Texas consider adopting some or all of the changes? 

Full post as published by Eastern District of Texas Federal Court Practice on February 03, 2008 (boomark / email).